Ex Parte Hopkins et al

Patent Trial and Appeal Board

Aug 8, 2014

12349289 (P.T.A.B. Aug. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEREMY T. HOPKINS and THOMAS E. ROSSER
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Appeal 2012-008599
Application 12/349,289
Technology Center 2800
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
N. WHITNEY WILSON, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
decision rejecting claims 1–12. We have jurisdiction under 35 U.S.C. § 6.

We AFFIRM.

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Application 12/349,289

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Appellants claim a method of implementing an engineering change
order comprising: comparing a first hardware description language design
with a second hardware description language design having at least one
implemented engineering change order(204); identifying differences, for
example, in latch points between the first and second hardware description
language designs(206); converting the second hardware description language
design to a non-optimized netlist(208); extracting from the non-optimized
netlist logical cones that feed, for example, the latch points(210); and
synthesizing based on the extracted logical cones and non-optimized netlist a
physical implementation of the second hardware description language design
(212) (claim 1, Fig. 2). Appellants also claim a computer-readable storage
medium including program code for implementing the previously mentioned
method steps (independent claim 7).

Copies of representative claims 1 and 7, taken from the Claims
Appendix of the Appeal Brief, appear below.
1. A method of implementing an engineering change order,
comprising:
comparing, using a computer system, a first hardware description
language design with a second hardware description language design,
wherein the second hardware description language design corresponds to the
first hardware description language design with at least one implemented
engineering change order;
identifying, using the computer system, differences in latch points,
primary inputs, and primary outputs between the first and second hardware
description language designs based on the comparing;
converting, using the computer system, the second hardware
description language design to a non-optimized netlist;
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extracting, using the computer system, from the non-optimized netlist,
logical cones that feed the latch points, the primary inputs, and the primary
outputs; and
synthesizing, using the computer system, based on the extracted
logical cones and the non-optimized netlist, a physical implementation of the
second hardware description language design.

7. A computer-readable storage medium including program code
embodied therein, the program code comprising:
first code for comparing a first hardware description language design
with a second hardware description language design, wherein the second
hardware description language design corresponds to the first hardware
description language design with at least one implemented engineering
change order;
second code for identifying differences in latch points, primary inputs,
and primary outputs between the first and second hardware description
language designs based on the comparing;
third code for converting the second hardware description language
design to a non-optimized netlist;
fourth code for extracting, from the non-optimized netlist, logical
cones that feed the latch points, the primary inputs, and the primary outputs;
and
fifth code for synthesizing, based on the extracted logical cones and
the non-optimized netlist, a physical implementation of the second hardware
description language design.

The Examiner rejects claims 7–12 under 35 U.S.C. § 101 "because
the claimed invention is directed to non-statutory subject matter" (Final
Office Action (FOA) 2).

The Examiner determines that these claims, when given their broadest
reasonable interpretation, encompass non-statutory subject matter in the
form of a transitory signal (id.).
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Appellants argue without embellishment "claims 7-12 are directed to a
computer-readable storage medium (as contrasted with a computer-readable
medium) which cannot reasonably be interpreted as a transitory propagating
signal in view of Appellants' specification (see, for example, paragraph
[0013])" (Br. 4).

Appellants' argument is not persuasive for the reasons given by the
Examiner (Ans. 11–12). In addition, Appellants fail to provide any support
for their implicit contention that a transitory signal is not capable of
performing a storage function. On its face, such a contention lacks merit. A
transitory signal necessarily stores the program code carried thereby for the
duration of the signal transit.

We sustain, therefore, the Examiner's § 101 rejection of claim 7–12.

The Examiner rejects claims 1–3, 6–9, and 12 under 35 U.S.C.
§ 102(b) as anticipated by Budumuru (US 7,644,382 B2, patented Jan. 5,
2010) and rejects claims 4, 5, 10, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Budumuru in view of Dillinger et al. (Spare I/O
Preparation for Use at Release Interface Tape B, 34 IBM TECHNICAL
DISCLOSURE BULLETIN 186-190 (1992)).

The Examiner finds that Budumuru anticipates independent claims 1
and 7 and specifically identifies (e.g., by column and line numbers) the
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Budumuru disclosures which satisfy the independent claim limitations (FOA
3–5).

Appellants contest the Examiner's findings that Budumuru satisfies
the comparing and identifying limitations of the independent claims via the
following argument.
Budumuru merely discloses comparing an
implementation (old) netlist with a reference (new) netlist to
identify failed compare points, as contrasted with comparing a
first hardware description language design with a second
hardware description language design to identify differences in
latch points, primary inputs, and primary outputs between the
first and second hardware description language designs.

(Br. 6).1

The Examiner responds to this argument by reproducing the
disclosures which support the finding that, contrary to Appellants' belief, the
Budumuru designs are defined using a hardware description language and
concomitantly that the comparing and identifying steps of Budumuru
involve first and second hardware description language designs as required
by the independent claims (Ans. 13–14). Significantly, Appellants do not
challenge the Examiner's response to their argument (i.e., no Reply Brief has

1 In addition, Appellants state that Budumuru does not teach the claimed
converting, extracting, and synthesizing limitations (id.). This non-
explicative statement does not address and therefore does not reveal error in
the Examiner's contrary findings. In essence, Appellants' statement is
merely an assertion rather than an argument.
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been filed). Based on the record before us, Appellants' argument lacks
persuasive merit.

Appellants do not present any arguments specifically directed to the
dependent claims including the claims separately rejected under § 103 (Br.
4–7).

Under these circumstances, we also sustain the above § 102 and § 103
rejections of the appealed claims.

The decision of the Examiner is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc